Comic Enterprises beats Fox’s ‘glee’ on trademark infringement, but loses passing off claim
Comic EnterprisesvTwentieth Century Fox Film
- Court
- High Court
- Judgment
- 7 February 2014
- Citation
- [2014] EWHC 185 (Ch)
A smaller business can win against a famous rival if the public links the wrong way round.
Comic Enterprises, which ran Glee Club comedy venues, sued 20th Century Fox over the TV show glee for trademark infringement and passing off. The comedy club won on trademark infringement but lost on passing off.
What happened
Comic Enterprises had run comedy and music venues called Glee Club since 1994 and held a UK registered trademark combining the words "The Glee Club" with a spotlight device. From 2009, Fox broadcast and marketed the TV series glee, selling merchandise, running concert tours and releasing DVDs all branded with the lower case word "glee". Comic Enterprises sued Fox for trademark infringement and passing off, arguing the public was confused into thinking its venues were connected to the TV show. Fox counterclaimed, arguing the registration ought to be narrowed for non-use and was invalid because "Glee Club" was descriptive.
What did the court decide in Comic Enterprises v Twentieth Century Fox Film?
The court found a likelihood of confusion under section 10(2)(b) of the Trade Marks Act 1994, helped by evidence of what's called "wrong way round" confusion, where witnesses thought the comedy club venues were linked to the TV show rather than the other way round. It also found infringement under section 10(3), because Fox's use of "glee" was detrimental to the distinctive character of Comic Enterprises' mark. The descriptiveness attack on the registration failed because a significant part of the public didn't understand "Glee Club" descriptively, and the mark had acquired distinctiveness through use. The registration was still partly revoked for non-use, narrowing its coverage in class 41 and removing class 25 entirely. The passing off claim failed because the only direct evidence of confusion ran the wrong way round and didn't show the misrepresentation needed to damage Comic Enterprises.
What we learned from this
- What I'd take from this is that owning a registered trademark can protect a small business even against a much bigger, more famous user of a similar name, provided the public link runs between the two brands, whichever way round that link goes.
- A registered trademark and a passing off claim are not the same thing. This case shows a business can win one and lose the other on the same facts.
- If you don't use all the goods or services covered by your registration, it's worth checking that use regularly, because unused parts of a specification can be revoked and narrowed.
- Evidence that customers wrongly associate your established business with a newer, bigger rival can support a trademark infringement claim, even though it won't always help a passing off claim.
Things to be aware of
- Passing off and trademark infringement need different things to be proved, so winning one doesn't guarantee winning the other, even on the same facts.
- A registration can be partly revoked for non-use even while the rest of it is successfully enforced, so coverage can shrink over time if parts go unused.
- This case went on to the Court of Appeal in 2016 on a separate point about series trademarks, so the full story runs beyond this first judgment.
The businesses involved
Comic Enterprises Ltd
Incorporated in England in 1994 and based in Birmingham, running performing arts venues. It operated comedy and music venues under the name Glee Club and held the UK registered trademark at the centre of this case.
- Companies House
- 02912361 Active
- Incorporated
- March 1994
- Registered office
- Birmingham
- Business activity
- Performing arts
- UK trademarks
- 1
Twentieth Century Fox Film Corp
A media company based outside the UK, which produced and broadcast the TV series glee from 2009, along with associated merchandise, concert tours and DVDs.
- Note
- Registered outside the UK
What happened next
- Trade press described the case as a landmark 'wrong way round' confusion decision, reporting that the TV show was found to have diluted and tarnished the reputation of the UK comedy club chain.Source: Wales Online, April 2014
What others said about it
- PBIP summed up the result for Fox simply as 'No Joy for Fox', underlining that the defendant lost on the main infringement claims despite its size.Source: Pbip
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This page is for information purposes only and does not constitute trademark advice or guidance. Summary drafted with AI assistance from the published judgment and checked by The Trademark Helpline (how we write these). Judgment: [2014] EWHC 185 (Ch) on Find Case Law, published under the Open Justice Licence. Company details from Companies House; trademark counts from the UK trademark register. Last reviewed 27 October 2026. Report an error.
